Late last year in Ex Parte Rodriguez (October 1, 2009, Appeal No. 2008-000693), the Board of Patent Appeals and Interferences (BPAI) ruled that a claim in means-plus-function format was invalid under 35 U.S.C. § 112, second paragraph, as being indefinite because structure other than a computer, i.e., an algorithm, was not provided in the specification for performing claimed functions. This precedential decision thus serves as a helpful reminder to patent application drafters of the importance of clearly identifying structure in the specification for every means-plus-function claim element and of carefully considering whether a claim is a means-plus-function claim despite omitting the traditional means-plus-function claim phrase “means for.” The BPAI further determined that non-means-plus-function claims are invalid under § 112, first paragraph, as not being enabled if they do not particularly identify structure, i.e., an algorithm, for performing the claimed functions. Ex Parte Rodriguez also highlights the BPAI’s power to introduce new grounds of rejection, a potential hazard practitioners are prudent to consider in deciding whether to appeal rejected claims.
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